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Tuesday, 23 November 2010

The subtle art of comparison: your chance to vote


Don't read the ruling in which a comparison of the two signs displayed here was undertaken (the IPKat isn't even giving its jurisdiction or citation yet). Just bear in mind the fact that they are intended for use on identical goods (let's say wines).

Take a look at these marks and bear in mind that

"... the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. In accordance with that case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of marks and of the goods or services in question, taking into account all factors relevant to the circumstances of the case, particularly the interdependence between the similarity of the trade marks and that of the goods or services covered ".
The 'public', for these purposes, consists of average consumers.

Do you consider, on the basis of the above, that there is a likelihood of confusion between the two marks? Please give your answer by clicking the "yes" or "no" button in the poll that appears at the top of the IPKat's side bar.

33 comments:

Pedro Malaquias said...

In my opinion, the answer would have to be negative.

Howeveer, I wouldn't be totally shocked with a positive answer, due to the aural impression and to the similar word element...

Anonymous said...

If I were Bass I would sue Artesa for infringment of the Bass triangle - TM No.1! It's a confusingly similar sign applied to an alcoholic beverage!

Anonymous said...

I think the IPKat is using a sleight of paw (or should it be sleight of claw?)!!!

The chances that people would vote here in favour of confusion being likely would surely increase significantly if the reproduction of the lower image would be such that it would be easier to read the name on the label.

In other words, the question would then simply be whether there is likely to be confusion between ARTESO and ARTESA.

Confusion might arise not when one looks at them side by side, mind, but when one sees either of them alone (along the lines of "funny, I could have sworn the picture was different, but then I suppose marketing makes them change the picture once in a while")

Anonymous said...

I voted no - the marks are visually different. But they are phoentically similar therefore the might create the risk of public confusion if advertised phoentically. Give us a maybe option!

Markwhiz said...

@Anomymous 12:41pm
The "maybe" option is only relevant to real life. Unfortunately the law here is binary and admits of only the on/off option: likely or not likely (to cause confusion)

Anonymous said...

Following the recent CFI decision in the LIMONCELLO case (concerning goods in the same sector), it would appear that there is a likelihood of confusion. It is likely that the verbal element would dominate the overall impression in the minds of the relevant public, taking into account how the average consumers would usually describe the goods in question.

Anonymous said...

Given how closely wines are normally named, often taken their names from villages with identical or near identical names, I would personally say that the names do not contribute to the distinctiveness of the marks, only the accompanying images

Eva Dzepina said...

One would also have to take into account the products the trademarks are used for. If these are products that usually confront the consumer mainly visually instead of aurally the graphic distinction should suffice to prevent the likelihood of confusion. Wine as a product is usually rather experienced visually (and of course orally :-)). Furthermore one should consider that a word Artesa is Spanish for trough and that it resembles the latin word artes for arts. That might diminish the distinction of the mark Artesa.

Chris H said...

Based on the above limited details I would say No, but I don't think we have enough information to make a full 'global assessment' and I suspect that there may be other factors which could change my mind to say Yes (e.g. potential independence of the word from the logo, type of goods, who the relevant person is as this may alter the perception, etc).

Anonymous said...

Chris H, we're only talking about a question of whether one trade mark is likely to be confused with anothre by the typical consumer buying his wine. For goodness'sake why shoyld anyone need to know about the "potential independence of the word from the logo" any more than we need to know about the potential independence of any bit of either mark from the other? It's not going to affect whether the guy buying the wine is going to be likely to be confused, is it?

John Halton said...

I agree with the first commenter: my instinct would be "no", but I wouldn't fall off my chair with shock if a judge said "yes".

One thought just to throw out there to see what people think: there does seem to be a subtle echo of the shape of the rider in the "yellow squiggle" on the lower mark. One can almost imagine that as the outcome to a trendy rebranding exercise. Has anyone ever tried to argue confusion on the basis that a consumer might think that the allegedly-infringing mark was the result of a rebrand by the original mark's owner?

Dave said...

Definitely potential for confusion. If someone recommended "Arteso" wines verbally to me, and a week later I saw a bottle of "Artesa", I could not be sure that it was not the wine recommended.

The images may be different, but the name in the mark is too similar (particularly in the wine world, where affected Italian/French/Spanish pronunciations of names could confuse it even further).

Anonymous said...

The last commenter says that the words are too similar, but the marks we are comparing aren't word marks they're pictures

Anonymous said...

My initial feeling is that the two marks are not sufficiently similar. However, there is simply not enough information to make an accurate assessment. Is this for registration purposes or infringement as the assessment may differ in either case. Also, which one is the registered mark? Arguably, the word element in the former ARTESO mark is more predominant than the ARTESA mark. Furthermore, what are the goods. Assuming the ARTESA mark is on wine, then the visual impression of the two marks as wine labels is likely to be greater than say goods which are purchased simply by a label comparison.

Li said...

I think there will be a bigger chance of confusing similarity if the registered/earlier mark is a word mark only instead of a composite mark comprising the logo and the word.

I have looked at the website of the Artesa website and found that in the actual label a much larger font for the word mark is used. If they are to loose in an opposition, they may loose in infringement too.

Rebecca Dimaridis said...

Not being able to see the word ARTESO at first on the BB, I wondered "is this a joke?".
On comparing the two marks in full, I initially answered "no". The figurative elements of the marks appear to me to be the dominant elements. Also, I believe that the design elements of a brand are very important for wine. To be honest, I can't even recall the brand name of the Chianti I buy, I just know its Chianti and the design of the label. I also know the design of the label of the Chianti that tasted horrible (and it was more expensive, funnily enough!). So for me, logos and design are key when it comes to wine. I would say no confusion, based only on a comparison of the two logos.
However, I do think there is a risk the relevant public might believe the wine comes from the same or economically-linked undertakings. Just because the design / logo element stands out most to me, and other "average consumers" like me, it doesn't mean its the same for the rest of the average consumers. Brand name also plays a role here. The average consumer may, as my colleagues suggested, think there is a rebrand. Or even a new product line by the same company. They may purchase it on that basis. Therefore the potential of risk is there.

Chris H said...

To Anonymous of 2:40 - the potential independence of certain elements is similar to the concept of dominant elements explained elsewhere (e.g. post by Rebecca Dimaridis). I have been involved in a case where a word mark was considered to be confusingly similar to a logo mark that included various words including one which was similar to the word mark, as it was considered to have an independent life to the rest of the logo. Incidentally we did not agree with this as the word in question was not identical, not particularly distinctive, and was a very minor part of the logo when considered as a whole.

Mark Schweizer said...

Jeremy, with all due respect, but this comparison is meaningless. Trade marks are not supposed to be compared simultaneously, because the consumer most often does not experience them simultaneously, but rather sequentially. Confusion between the remembered signs is therefore relevant. By asking for a simultaneous comparison, you reinforce a mistake courts make all the time and many practitioners and academics fight to overcome.

Plus, as other commenters have indicated, it makes a difference whether the goods in question are generally ordered orally or not.

Cory Hecht said...

I think one can almost imagine that as the outcome to a trendy rebranding exercise.

Jeremy said...

Mark, with respect, I don't think the comparison is meaningless -- but your feeling that it is meaningless is a reflection of your skill and experience in applying the current legal test in a classic office or court action.

Let us consider the position of an honest trader who has designed, or plans to design, a trade mark which he will use to differentiate his goods from those of others. He will reasonably consider -- as do the preponderant majority of those who have so far responded to the poll -- that his mark is not identical to the other mark and that it is so little similar to the other mark as to suggest that there is no likelihood of confusion between them.

My point is this: trade mark law appears to be a set of rules for a highly abstract mind game played by examiners, lawyers, Board of Appeal members and judges. It however appears to have departed from the commercial arena in which consumers are confronted with choices and in which traders are supposed to act in an honest and pro-competitive manner.

People complain about how over-crowded the register is, and about how difficult it is to find a mark which is registrable. When the application of the law leads to a register which can't simultaneously tolerate the registration of these two signs, I think there's something wrong.

Arthur Sleep said...

I think it needs to be taken into consideration whether the relevant public has just staggered into the off-licence at 3am looking for a bottle of Arteeshoa(burp)...pardon me!

Eva Dzepina said...

Re Mark's and Jeremy's points: Since in an action the marks will have to be displayed simultaneously in the application, it is always difficult for the judges to assess the sequential experience of marks, although I have experienced in German trademark cases this point will generally be mentioned and taken into account. Again, in this particular case there could also be a strong element of a simultaenous experience as the wine could be displayed next to each other in a supermarket. In the end in a legal dispute about trademark infringement it will all come down to the individual perception of the competent court which can vary very strongly as we all know.

Anonymous said...

Fascinating puzzle. Just in time for Thanksgiving wine purchases ! I voted No, of course, along with most everyone else. The gross differences would obviously give whichever party was asserting likelihood of confusion a big problem in a U.S. court in an infringement case. On the other hand . . . if it were an opposition before the U.S. Trademark Trial & Appeal Board, it would be a closer case because of the case law saying that the word part of a composite mark is dominant. Also, oppositions are more "abstract" and technical than court infringement cases. If wine were typically purchased by voice request it might get the plaintiff close to 50/50. Plaintiff would point to restaurants and wine bars where a list of names (only) appears on the wine list (though they do show you the bottle for approval before uncorking it). But wine is typically purchased at retail by looking at it on a shelf, checking details like price, where it comes from, type of wine, comparing other possible choices, etc. Careful purchasers and discrimination in the purchasing environment militate against confusion as to source. Price could also be a factor, the higher it is, the less likely the confusion. Unless the plaintiff could pull a rabbit out of its hat, with a survey that works or some evidence of actual confusion - both of which seem unlikely - I think plaintiff (whoever it is) would lose in either U.S. forum. Can't wait to see the case.

Mark Schweizer said...

Actual confusion is not relevant. Likelihood of confusion is a legal concept. The only way to get some predictability (some...) is to adhere to precedent and try to judge alike cases alike. Taking into account the fact that (speaking for Swiss law) the verbal element of a mark is almost always given (too) much weight, I believe these two marks are indeed confusingly similar, legally speaking. The survey is deliberatly designed to reach the conclusion that they are not confusing, which is why I call it misleading.

As to the trader choosing a mark: if he did actually search the register and find the older mark, he should then get the advice of a trade mark practitioner, who, taking into account precedent, could give him some estimation as to whether a court will find likelihood of confusion (if courts adhered to precedent in this area of law, which unfortunately they too often do not).

Having said all this, I'd much rather discuss this over a pint of beer in a pub with you, Jeremy, than over the Internet. I'm pretty sure that, after a suitabable number of beers, we could reach an agreement. And would not remember the next day that we had, which has the added benefit that we could argue over the same issue again.

Jeremy said...

Likelihood of confusion is only a legal concept because lawyers treat it as such. In the real world, it's a real concept. In the same way, you can define likelihood of rain as a legal concept but what the farmer wants to know is whether it's likely to rain or not.

I agree that this matter is best discussed over a suitable number of beers, but on the strict understanding that the beer in question is legally beer and not some wishy-washy lager, fit for nothing but sponsoring sports events ...

I'll treat you to the first round.

Mark Schweizer said...

Well, I believe you would agree that two marks that only correspond in their descriptive parts may well be actually confusingly similar, but would not support a claim of trade mark infringement. That's because LoC is a legal concept. Actual confusion is not relevant. Treating LoC as a legal concept allows to abstract away from the circumstances of the individual case and treat like cases alike. If LoC is understood as requiring actual confusion, soon everybody will be filing LoC surveys (hello there, Americans).

I'll take you up on your offer and buy the next ale for you; I, however, shall stick with beer.

Aaron said...

I think if the jurisdiction is in Europe then yes to LOC if it is a case before a registry. Probably a no if before a court.

Rob White said...

I think they are similar aurally which is crucial for wines that of course are often ordered through aural request. Don't forget, aural confusion alone can be sufficient (Lloyds) and for combination marks, the aural element, unless very weak, always holds the greatest weight. Consumers may think this is an updated logo and may misremember the one letter difference between the marks. Harsh but overall, correct I would say.

Rebecca Dimaridis said...

When and where are the beers going to be consumed, and are we all invited? :)

Derek Tong said...

Considering the trademark as a whole ie, the sum of its word and pictorial elements, the visual alongside the aural, one would be hard pressed to find likelihood of confusion.

From the point of view of a consumer, how a label looks on a bottle of wine would sway the balance for me. Certainly would be the case if I knew or had previously purchased the product in question; but supposing a friend recommended it to me and I couldn't remember whether he said "Artesa" or "Arteso", I might be confused about which one he meant, but seeing the label, I would not be confused about whether they were the same or sufficiently affiliated.

Anonymous said...

Words speak louder than pictures.

I suffer from imperfect recollection (and, although some may consider me to be a moron in a hurry) these two seem confusingly similar to me

Birgit Clark said...

I like Mark's comments on LoC and it being a legal concept to allow for a certain degree of legal certainty and predictability. You say "actual confusion is not relevant..." I agree but would like to add it actual confusion may help your case.

Now are the marks similar?

Visually: the word element is similar, the 'rest' (device elements) not very much, but the word element is obviously important. It is arguable how important but I'd say we some visual similarity.

Conceptually: haven't done any research but just assuming that the word elements have no meaning (in relation to goods)so: +

Phonetically: very close, plus wine will often be purchased by just saying the name. +

Goods: ID/very similar. +

Overall: LoC cannot be excluded.

Rheineland said...

Just any updates?

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